Tuesday, 29 April 2014

Brazilian company Calcado Azaleia failed in its appeal against rejection of its application to register the mark OLYMPIKUS & Logo in Costa Rica for “clothing, footwear, headgear” (Class 25), following an opposition by the Costa Rican National Olympic Committee.

The Law of Creation of the Costa Rican Institute for Sports and Recreation and Legal Regimen of Physical Education, Sports and Recreation grants the local Olympic Committee exclusive use of the words “Olympic”, “Olympiad” and the five interlocking rings of the International Olympic Committee. Calcado Azaleia had submitted that this law only protected the Committee against use of identical marks, that its own mark was neither identical nor confusingly similar and it was a famous mark in a number of other jurisdictions -- none of which swayed the Tribunal Registral Administrativo, Costa Rica's administrative appeal board. According to the Tribunal, the application was barred from registration on both absolute and relative grounds and that, even if the mark were famous elsewhere, that did not affect its registrability in Costa Rica.

Ahead of the World Cup and impending Olympics, there's some significant news from Brazil. Resolution No. 107/13 -- which regulates the new procedure for recognition of "highly renowned" trade marks in Brazil, came into force on 6 February 2014. This Resolution relates to the role of the Brazilian Patent and Trade Mark Office (INPI) in establishing the status of trade marks as being "highly renowned".

To gain "highly renowned" status in Brazil a trade mark must fulfil three criteria:

(i) it must be recognised by a significant portion of the public in general;

(ii) the general public must associate it with a degree of quality, reputation and prestige in relation to the relevant goods or services;

(iii) it must have the requisite degree of distinctiveness and exclusivity.

The Resolution, which fixes the level of fees that INPI charges for making its assessment, makes it possible to seek recognition of a mark's "highly renowned" status through an autonomous procedure. Trade mark owners may request such recognition at any time during the validity of the trade mark, subject to the submission of the necessary evidence of such status and upon payment of the specific official fee.

Monday, 21 April 2014

The Peruvian IP Institute (INDECOPI) is once again looking after its domestic film industry. Two months ago with the release of the Peruvian movie ‘El vientre’ (the womb) we became aware of extra activities that the Institute, together with other institutions such as the Commission to Combat Customs Crimes and Piracy (CLCDAP), the Attorney General's Office, and the National Police of Peru , were putting into effect (here).

The campaign and actions taken appeared to have been a success since before the release of two other domestic films ‘Loco cielo de abril’ and ‘La cara del diablo’, INDECOPI together with the above institutions and organisation will yet again put into practice the same policy: campaigns and actions. INDECOPI's webpage reminds the population the importance of copyright. Added to this is the observation made: “the action of illegal reproduction or illegal marketing of films brings heavy penalties” as well as criminal penalties (up to 8 years in prison). The news also noted that during 2013, INDECOPI’s Copyright Directorate imposed several fines and seized pirate goods in the excess of 26,000,000 PEN (5,585,000 GBP --exchange rate: 0.214809 valid as of: 21/4/2014).

Finally, INDECOPI “urged the public to reject any offer of pirated material from unscrupulous traders who profit from the efforts of others and who do not hesitate to take advantage of the success of writers and artists.”

Thursday, 17 April 2014

Answering this question has been the task of The Max Planck Institute for Innovation and Competition, together with a number of international patent scholars around the world – including ‘Latinos’ contributors such as Carlos Correa (Director of the Centre for Interdisciplinary Studies on Industrial Property and Economics Law, University of Buenos Aires (Argentina)) and Denis Borges Barbosa (Professor at the Catholic University of Rio de Janeiro (Brazil)). The “Declaration on Patent Protection: Regulatory Sovereignty under TRIPS” (“Patent Declaration” in short) can be assessed here.

Today the “Patent Declaration”, which indeed shows the policy space in TRIPS, is launched and we can participate and support it. According to Matthias Lamping (currently a Senior Research Fellow at the Max Planck Institute, who kindly passed the information to the iptango), “The Patent Declaration supplements our existing work on issues of international IP law, such as the Declaration on a ‘Balanced Interpretation of the Three-Step Test in Copyright Law’ (www.ip.mpg.de/en/pub/news/declaration-threesteptest.cfm), which deals with limitations and exceptions to copyright protection, and the ‘Principles for Intellectual Property Provisions in Bilateral and Regional Agreements’ (www.ip.mpg.de/en/pub/news/fta_statement.cfm).”

Scanning through the ‘Patent Declaration’ it seems that actually international law leaves policy space for pursuing national interest. For example, the declaration explains that there exists flexibility for states to use compulsory licenses. Indeed, it asserts that this is “ensured by the fact that neither Article 31 of the TRIPS Agreement nor Article 5A of the Paris Convention contains any restriction with regard to the grounds on which a compulsory licence may be issued.”

Another point covered by the declaration is ‘transit’. The “Patent Declaration” goes on to say that “ Patent rights should not create barriers to legitimate trade (cf. Recital 1 of the Preamble and Article 41 of the TRIPS Agreement). Goods in transit cannot be deemed to infringe any of the exclusive rights that a patent normally confers if those goods are not destined for the market of the country where transit occurs. The territoriality principle applicable under patent law has not been overridden by the TRIPS Agreement (see, for example, Paragraph 6(i) in fine of the 30 August 2003 WTO decision on the ‘Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health’, concerning the export of pharmaceutical products produced or imported under a compulsory licence). Customs authorities and courts of the country of transit usually lack competence to determine whether goods in transit are infringing in the countries of origin or destination and cannot decide to grant preliminary or permanent injunctions in their respect.
The detention of goods by customs authorities based on claims of infringement can also violate the principle of freedom of transit enshrined in Article V of the GATT.” In this point, I am sure we could hear some opinions from Brazil – you may remember several seizures of generic drugs in transit by the Dutch customs authorities in 2008 and 2009 which showed friction between the European Union legislation and the World Trade Organization.

I leave you with this piece of information in the hope that it would be of interest to you.

Thursday, 3 April 2014

Chamber of Commerce of Latin America signed a memorandum of understanding to promote the Pacific Alliance in the business sector.

The Colombian Chamber of Commerce of Bogota (CCB) informs that the agreement was signed between the Chambers of Commerce of Bogota (Colombia), Mexico City (Mexico) and Santiago de Chile (Chile) to promote exchange of knowledge, networking, participation in tenders, best business practices, trade relations and promoting the image of the region.

Accordingly, the memorandum of understanding contemplates three key areas:
1. - Awareness and information for entrepreneurs, through international forums held in each country of the Pacific Alliance.
2.-Training programs regarding public procurement -- business placed in one of the Alliance members to participate in tenders.
3. - In terms of attracting investment it will undertake workshops to enhance the ‘Region’s Mark’. The Chambers of Commerce will unite to ensure permanent support to entrepreneurs through programs and projects that are managed by the agreement.

Moreover, the CCB informs that an element incorporated into the framework agreement was the Cultural and Creative Industries sectors, affirming that internationally these sectors do have much higher rates of growth than that of traditional sectors. Cultural and Creative industries “add economic and social value to nations and individuals, do constitute a form of knowledge that translates into jobs and wealth , and use creativity - the ‘raw material’ - to encourage innovation in production and marketing processes .”

Finally, the Pacific Alliance will offer opportunities of production to Colombia, Mexico, Peru and Chile, offering competitive products and will open the Asian market through existing agreements.

Tuesday, 1 April 2014

A year ago, Mexico signed the Madrid Protocol giving trade mark owners a simplified mechanism through which they can protect their mark abroad. Administered by WIPO it is said to be the most efficient means of achieving international protection for a registered trade mark.

Before 2012 no Latin American country (apart from Cuba) had acceded and much was speculated (here, here and here). Colombia and Mexico signed just months apart from each other and time flies….Mexico is already celebrating its first birthday with good reports from WIPO ( Mexico’s process of the applications have been of high quality and efficiency).

The Mexican Institute of Intellectual Property (IMPI) reports that after Mexico’s entry, 54 applications from companies and individuals with business activities in Mexico have submitted their trade mark through the Madrid Protocol. These businesses seek protection mainly in the United States, the European Union and China. In addition, abroad applications notifying Mexico as Designated Office have reached 5,476 of which 1,907 has been granted. Countries that have designated Mexico the most are: the United States, Switzerland, Germany, Spain and China.

IMPI emphasises that the Protocol encourages foreign investment providing legal certainty and giving the opportunity to international companies to enter the domestic market providing an easy accessible mechanism for registration of their marks in our country.